April 11, 2011

Building an Invalidity Position

Most patents are junk. But proving that to a judge or jury is no easy task.
The more technical the claimed invention, the more difficult it can be to convey
the mapping between prior disclosures and patent claims to one of less than
skill in the art. Prior art search is the first step to developing an invalidity
position, and a most important step. But prior art search is best viewed as a
cog used to build an invalidity steamroller. Fitting the parts together isn't
always as simple as it may seem.

Invalidating claims necessarily depends upon claim construction. Invalidity and non-infringement hang off the opposite ends of claim
construction. A broader construction typically eases invalidity while making
non-infringement more problematic. A narrow construction puts a pothole in the
road to invalidity, while improving the drive to non-infringement.

Court dockets put the cart before the horse, in commonly requiring production
of prior art that makes for invalidity contentions prior to the claim
construction hearing. While claim construction is typically the first hearing,
it is not the first production requirement. This is a judicial oversight. Given
its lynchpin importance, upon which all else hinges, claim construction should
be the first task. Instead, some judges don't bother with claim construction
until trial. The Northern District of California developed a schedule for patent cases that
has been widely imitated in other districts. Unfortunately, that schedule puts
claim construction much later in the process than it should be. Texas judges
often tend to broad constructions, taking the claims at face value, which is one
reason why patent holders like Texas.

Litigators often hire prior art searchers, like
Patent Hawk, specialists in ferreting prior
art, to take point on the archeological dig. The rubber meets the road for prior art search quality in precision, care, and
work product. The nominal practice by prior art searchers is to "throw it over
the wall" - simply email a copy of the reference to the client firm. Providing a
written summary beyond quotes is problematic, because it's necessarily
second-hand, and because facilely characterizing the prior art can become a
weapon for the patent holder if the email happens to come out during discovery.
Although nominally covered under work product, it is not unheard of that prior
art search result emails from a third-party firm are discovered.

Best practice for providing prior art search results is the Patent Hawk way.
Patent Hawk provides emails of relevant found references, with a summary digest
version of each reference by pulling salient quotes from the reference, and
underlining particularly relevant passages. Different topics are labeled, but
the reference is in no way characterized. A single download page is provided for
a matter. That provides a one-stop shop for anyone involved at the law firm,
from clerks preparing discovery production, on up, to access the prior art.

Patent Hawk seeks coverage: finding prior art to cover all claimed elements.
Patent Hawk calls off a search upon reaching the point of diminishing returns,
regardless of budget. The Patent Hawk business model follows the golden rule of
relationships: do for others what you'd want done for you if the the tables were
turned. Patent Hawk sincerely looks to its client's best interests. Quality
results matter. The money takes care of itself.

The search results are then used to prepare invalidity charts, which map each
claim element to the prior art reference. These charts become part of an
appendix to an invalidity memo covering the high points of how the claim was
anticipated or obvious in light of the prior art. The memo is backing to a
motion to invalidate the patent under 35 U.S.C. §102
or §103.

§102 allows a patent claim unless it was explicitly or inherently disclosed
every claimed limitation. §102 invalidity is by prior art anticipation.

If a claim is not anticipated, it may be obvious in light of the prior
art.
§103 allows a patent claim unless "the subject matter as a whole would have
been obvious at the time the invention was made to a person having ordinary
skill in the art to which said subject matter pertains."

A court must ask whether the improvement is more than the predictable use
of prior art elements according to their established functions. The analysis
need not seek out precise teachings directed to the specific subject matter
of the challenged claim, for a court can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ. KSR
Int'l Co. v. Teleflex Inc., 127 S.Ct. 1727, 167 L.Ed.2d 705, 550
U.S. 398 (2007).

Finesse in prior art search comes in considering the quality of "story art."
Great story art maps to claim elements with little to no description of context.
The prior art literally reads on the claim elements, itself telling the story.

It is not uncommon, particularly for technically intricate art areas, to find
apt technical art that is lousy story art. For the technically savvy,
the prior art discloses the claimed invention, but the mapping is as clear as
mud, typically because the disclosure requires explanation to the point of
translation for a judge or jury to appreciate. The more story that needs to be
told to explain a prior art reference, the worse it is as story art. Lack of
clarity provides openings for the other side to prevail by obfuscation. For
getting to invalidity, technically second-rate good story art can trump on-point
but poor story art.

Building the strongest invalidity position can be an interlaced task.
Unfortunately, invalidity is seldom approached holistically when an outside firm
performs the prior art search, and the litigation firm charts the results.
Widespread practice is to skimp on prior art search via a limited budget, with
the results handed off to law firm associates who later chart. For
simple cases, that works fine. For cases where the position is dicey, the
business-as-usual prior art search approach can miss the boat.

Best
practice is to holistically build an invalidity position: search, chart, then search more if necessary to fill any gaps.
Patent Hawk has the skill to prepare stellar charts from search results, and can
even draft the relevant portions of the invalidity memo, including on-point case
law citation.

Patent Hawk can also prepare reexamination requests, a route to foil further
assertion, and possibly get a case stayed. The early a reexam request is filed,
the more likely that a court will grant a stay.

Spending more up-front to develop convincing invalidity charts is very little
to pay for something that has such tremendous benefit in reducing the cost of
litigation. The alternative can easily cost millions.